Ex Parte HickeyDownload PDFPatent Trial and Appeal BoardApr 29, 201411796695 (P.T.A.B. Apr. 29, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte F. LEO HICKEY __________ Appeal 2014-001867 Application 11/796,695 Technology Center 1700 ____________ Before CHARLES F. WARREN, ROMULO H. DELMENDO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2014-001867 Application 11/796,695 2 Appellant appeals under 35 U.S.C. § 134 the final rejection of claims 1-20 in this reissue application of US Patent 5,922,779 to F. Leo Hickey (Hickey ’779). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Oral arguments were heard in this appeal on April 23, 2014. We AFFIRM. Appellant’s invention is directed to polyol resin blends used to make rigid, closed-cell polyisocyanate-based foams (Hickey ’779, col. 1, ll. 8-12). Claim 1 is illustrative: 1. A polyester polyol based resin blend comprising: (a) an aromatic polyester polyol formed by an inter-esterification reaction between (i) a phthalic acid based material; (ii) a hydroxylated material having a functionality of at least 2; and (iii) from about 1 to 35 percent by weight, based on the total weight of the aromatic polyester polyol, of a hydrophobic material having: (1) from one to six radicals, the radicals being selected from the group consisting of carboxylic acid groups, carboxylic acid ester groups, hydroxyl groups, and mixtures thereof; (2) hydrocarbon groups comprising a total of at least 4 carbon atoms for each radical present in the hydrophobic material; and (3) an average molecular weight of from about 100 to 1000, wherein the hydrophobic material is free of dimer acid; (b) a nonionic surfactant; (c) from 14 to about 35 parts per hundred parts of all polyols of a C4 - C7 linear or branched hydrocarbon blowing agent; and (d) from 1 to about 0.05 part of added water per hundred parts of all polyols. Appellant appeals the following rejection: Claim 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Magnus et al. (US 4,644,048, patented Feb. 17, 1987) in view of M. van der Wouden & J. Stijntjes (The Use of Polyester Polyols in CFC-free Rigid Foams, UTECH ’94, Paper 21, p. 105 (1994)). Appeal 2014-001867 Application 11/796,695 3 ISSUE Did the Examiner reversibly err in concluding that it would have been obvious to substitute van der Wouden’s pentane blowing agent for the chlorofluorocarbon (CFC) blowing agent in Magnus? We decide this issue in the negative. FINDINGS OF FACT & ANALYSIS The Examiner finds that Magnus discloses all the limitations of claim 1, except for the use of C4-C7 linear or branched hydrocarbon blowing agent (Ans. 2). The Examiner finds that van der Wouden discloses replacing chlorofluorocarbon (CFC) blowing agents with pentane and water as blowing agents in order to reduce ozone depletion (id. at 3). The Examiner concludes that it would have been obvious to replace the CFC blowing agents of Magnus with the water and alkane blowing agents of van der Wouden to avoid ozone depletion (id.). The Examiner further finds that the amounts of the respective materials claimed would have been a matter of routine optimization of result-effective variables (id.). The Examiner finds that it would have been within the purview of the ordinary practitioner in the art to vary the amount of hydrophobic material in order to balance the compatibilities of the respective blowing agents that are being replaced. Id. The Examiner finds that van der Wouden discloses using polyester polyols to improve compatibility with hydrocarbon blowing agents (id. at 3-4). The Examiner finds that a person of ordinary skill in the art seeking to balance the compatibility of hydrocarbon and water blowing agents in the preparations of Magnus would have manipulated the hydrophobic materials as result-effective variables involved even beyond the exemplified Appeal 2014-001867 Application 11/796,695 4 embodiments of the combinations to balance the effective foaming and formulation compatibility (Ans. 4). Appellant argues that the Examiner has not established a prima facie case of obviousness because Magnus and van der Wouden fail to teach or suggest a dimer acid-free polyol composition (Reply Br. 2). Appellant contends that if one of ordinary skill in the art would have combined van der Wouden’s pentane blowing agent with Magnus, the ordinarily skilled artisan would have also combined van der Wouden’s polyster polyol compatibilizer composition that contains dimer acid (App. Br. 17). Appellant contends that there is no reasonable expectation of success in simply substituting van der Wouden’s pentane blowing agent for the CFC blowing agent in Magnus (Reply Br. 3-7). Appellant contends that in the Examiner’s result-effective variable analysis of the amounts of the various claimed components of the composition, the Examiner failed to demonstrate that the variables relied upon were in fact result-effective (App. Br. 21-22). Appellant argues that the Examiner’s combination is based upon an obvious to try standard and hindsight (id. at 22-23). Appellant contends that van der Wouden teaches away from the claimed invention that requires a dimer acid-free hydrophobic material (id. at 23-24). Appellant contends that van der Wouden teaches away from the simple substitution of pentane for chlorofluorocarbons as the blowing agent because van der Wouden teaches that a dimer acid hydrophobic material is required as part of the composition (id. at 24). Appellant submits the Declaration of F. Leo Hickey (hereinafter the Hickey Declaration) as evidence that van der Wouden’s composition contains dimer acid (id. at 15). Appellant further relies on the Hickey Declaration to show that a greater amount of van der Wouden’s hydrophobic Appeal 2014-001867 Application 11/796,695 5 material would be required for pentane compatibility than is required by the claims (App. Br. 26-27). Appellant’s arguments focus on van der Wouden’s compatibilizing composition as containing dimer acid and teaching away from a simple substitution of van der Wouden’s pentane blowing agent for Magnus’ CFC blowing agent. However, the Examiner’s rejection is based on substituting van der Wouden’s pentane blowing agent for Magnus’ CFC blowing agent with the attendant variation in the compatibilizing polyester polyol of Magnus. As noted supra, the Examiner finds the combined teachings of van der Wouden and Magnus would have suggested to the ordinarily skilled artisan the manipulation of the polyester polyol compositions as result- effective variables for compatibilizing the blowing agent. Magnus discloses using a polyester polyol that is compatible with CFC blowing agents and contains a surfactant (col. 3, ll. 40-49). Van der Wouden teaches adjusting the polarity of the polyol by varying the composition in order to cause better compatibility with a particular blowing agent (van der Wouden 2). Van der Wouden teaches that adjusting of the polarity of the polyester polyol is analogous to using surfactants (van der Wouden 2). Van der Wouden further instructs that pentane may be emulsified into polyol compositions that are tailored for compatibility with hydrochlorofluorocarbons (HCFC) (van der Wouden 2). We find that the combined teachings of Magnus and van der Wouden would have suggested substituting van der Wouden’s pentane for the CFC blowing agent of Magnus to avoid ozone depletion as found by the Examiner. We find that van der Wouden instructs that the components of the polyol compositions are result-effective variables that affect the Appeal 2014-001867 Application 11/796,695 6 compatibility of the polyol with the blowing agent. Accordingly, we agree with the Examiner that one of ordinary skill in the art would have substituted van der Wouden’s pentane and water blowing agents for Magnus’ CFC blowing agent to prevent ozone depletion. In making such a substitution, we agree that it would have been within the skill of the ordinarily skilled artisan to adjust the dimer acid-free polyol composition of Magnus to achieve the desired degree of compatibility with a particular blowing agent. However, even if Magnus’ polyol composition is not modified, van der Wouden teaches that pentane blowing agents may be used in HCFC polyol compositions as long as the pentane is emulsified. Van der Wouden teaches that controlling the polyol composition polarity is analogous to using a surfactant. In other words, the prior art recognizes that surfactants and/or their properties are important in blowing agent compatibilization. Magnus’ polyol composition contains nonionic surfactants which would have reasonably been expected to aid in emulsifying the substituted pentane blowing agent. Accordingly, we do not find that van der Wouden teaches away from the simple substitution of pentane for a CFC blowing agent. van der Wouden does not teach its solution to pentane compatibility is the only solution or that other solutions would not work. To the contrary, van der Wouden instructs that changing the polyol composition affects the ability of the polyol to compatibilize blowing agents with different polarities. Appellant’s arguments and evidence in the Hickey Declaration regarding van der Wouden’s polyol composition containing dimer acid and the amount of hydrophobic material required by van der Wouden’s polyol in order to solubilize pentane being outside the claimed hydrophobic amount range are not persuasive. The Examiner relies upon Magnus to teach a Appeal 2014-001867 Application 11/796,695 7 polyol composition free of dimer acid, which Appellant does not dispute. For the reasons noted above, we conclude that the combined teachings of Magnus and van der Wouden would have suggested the claimed subject matter. The Examiner has not engaged in impermissible hindsight or based the rejection on an “obvious to try†rationale, rather, the teachings of the references would have suggested the claimed subject matter. In our view, the Examiner has established a prima facie case that the teachings of the references as a whole would have suggested the claimed invention. On this record and for the above reasons, we affirm the Examiner’s § 103 rejections. DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). ORDER AFFIRMED cdc Copy with citationCopy as parenthetical citation